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This is the fourth article in a series outlining practical tips to help reduce IP portfolio expenses without compromising the protection of your IP. We have detailed 12 tips across the first three instalments aimed at helping IP rights-holders keep more cash in their pockets; covering patents then designs. In Part four we consider six capital-saving ideas for trade mark owners.

Trademarks

Tip 13: Defer the acceptance deadline of pending applications 

Instead of allowing trade mark applications to lapse due to budgetary constraints, we encourage mark owners to check whether grounds exist to defer the acceptance. The acceptance of an application can be deferred on the following grounds:

a. a mark raised as an objection to the application is pending;

b. a mark raised as an objection to the application is within the renewal grace period;

c. the Applicant has filed an application to remove a cited mark for non-use;

d. an objection has been raised based on a cited mark and the Applicant is trying to overcome the objection by providing evidence of honest concurrent use, prior continuous use or 'other circumstances' such as a Letter of Consent.

The period for which acceptance of the application will be deferred depends on which ground deferment of acceptance is requested (it could be as little as 6 months or a number of years). By deferring the cost of addressing objections raised against your applications, this strategy is a good way to buy time without sacrificing the priority date of your trade mark application.

Tip 14: Consider amalgamating trade marks into multi-class registrations 

If a registered trade mark owner has more than one registration in a single class lodged on the same day for the same trade mark (before January 1996), the Trade Marks Act allows these marks to be amalgamated into one registration covering multiple classes. This not only lowers trade mark costs including for renewal, but also reduces the administrative burden on trade mark owners with respect to monitoring renewal deadlines for multiple marks.

Tip 15: Review your trade mark portfolio 

Now is a good time to review trade mark portfolios and check the following: 

a. marks no longer in use may not need to be renewed (saving renewal fees and charges);

b. marks being used for different goods or services to those for which the mark is registered;

c. marks registered for (or including) logos or images that have changed since registration. 

The money saved by following (a) above, can be reallocated to file new applications as per (b) and (c); essentially adding new protection without additional expense.

Tip 16: Check trade mark name and address details 

Companies can change names, sell trade marks or merge into other companies – particularly during periods of economic uncertainty. Ownership of the trade marks consequently changes, often without updating these details against the company’s trade marks on the Register. Although the Trade Marks Act 1995 does not stipulate penalties for incorrect details on the Register, of greater concern, is that failure to update the Register could affect a registered trade mark’s validity. 

Tip 17: Request a cooling-off period in opposition proceedings 

If your trade mark application has been opposed or you have opposed an application for a third-party trade mark, consider the possibility of negotiating a commercial settlement of the dispute.  The parties can agree to suspend the opposition for an initial period of 6 months (which can be extended once more by a further 6 months) allowing for the negotiations to take place. The party requesting the cooling-off period will need to obtain the other party’s consent to the cooling-off period. The benefit of a commercial settlement is certainty of outcome and reduced costs.

Tip 18: AMPLIA® self-filing platform

If your trade mark filings must proceed during the current turmoil, Griffith Hack’s online trade mark filing and portfolio management platform, AMPLIA (https://amplia.one) can further reduce budget pressures. AMPLIA allows the filing of Australia and in New Zealand trade mark applications from the comfort of home, at a reduced cost. Securing a priority date on the Register is important even in times of a pandemic.

After signing up, simply complete the filing details in the provided online form (on your PC or smartphone). If you are nervous about self-filing the application, check the “Request Attorney Review” box (which attracts a small additional charge). A qualified attorney from Griffith Hack will review the application before it is filed, to ensure all formalities have been complied. The two-fold advantage being increased cost savings with the benefit of professional review before filing.

To discuss any of the above in greater detail, or seek further advice about what your business can do to free up capital without exposing your IP portfolio to unnecessary risk, please contact the author or enquire via enquiries@griffithhack.com

Our Expert Project Lead

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